The Beijing High People's court has held that although the software program PowerPoint is well known by the public, this has not weakened the connection between the product and the trademark owner Microsoft Corporation. Instead, its reputation has strengthened its connection as a Microsoft product. The word 'PowerPoint' functions as an identifier of services and is registrable as a trademark.
On November 30 2011 Microsoft filed an application for the international registration of the trademark POWERPOINT covering computer services and cloud computing services, under Class 42 with territorial extension to China.
On September 24 2012 the China Trademark Office refused the trademark on the grounds that "the mark is devoid of distinctiveness in respect of the services for which it is used".
Microsoft filed an application for review to the Trademark Review and Adjudication Board (TRAB), which on January 30 2015 confirmed the refusal on the grounds that the trademark lacked distinctiveness, as provided by Article 11.1(3) of the Trademark Law, which states that signs "that otherwise lack distinctiveness... shall not be registered as trademarks".
Microsoft filed an appeal with the Beijing IP Court which, on December 18 2015, issued a judgment maintaining the TRAB's decision.
The Beijing IP Court held that PowerPoint is a kind of file format developed by Microsoft. The use of the applied trademark by Microsoft makes consumers generally recognise PowerPoint as the name of a file format rather than as a sign which distinguishes the origin of goods or services. Therefore, the court found that the applied trademark lacked distinctiveness and was unregistrable, pursuant to Article 11 of the Trademark Law.
Microsoft appealed to the Beijing High People's Court.
During the appeal, the TRAB argued that the long-term use of POWERPOINT by Microsoft has led consumers to recognise the relationship between this mark and presentation files. Therefore, it held that PowerPoint was a generic name, which would not be recognised as a sign to distinguish the origin of goods or services, and which thus lacked distinctiveness.
On December 26 2016 the Beijing High People's Court revoked the first-instance judgment and ordered the TRAB to issue a new decision.
The court held that the recognition of a generic name should be based on the general knowledge of the relevant public nationwide. The court explained that a generic name shall not be registered as a trademark if:
- it describes the nature of the goods and cannot function as a source identifier; and
- the registration of such a name as a trademark would lead to a monopoly over public resources and would harm the interests of competitors in the industry.
The court noted that Microsoft had applied to register the trademark POWERPOINT for computer software in Class 9 in 1999 and had obtained a registration in 2000, and that this registration was still valid. This meant that, in 2000, 'PowerPoint' was not a generic name for presentation software. Since 2000, POWERPOINT as a trademark for presentation software has been known by the relevant public, but this did not weaken the connection between the product and the trademark owner, Microsoft. Instead, it strengthened the connection.
Further, there was no evidence that other competitors in the same industry were using PowerPoint as a product name or as a software format. There are different trademarks (eg, KEYNOTE, SLIDE and WPS) for the same types of products owned by different parties. Therefore, the TRAB could not prove that 'PowerPoint' had become a generic name for presentation software.
'PowerPoint' as a coined phrase in English is original. Given that the documented evidence was insufficient to prove that this had become a generic name, the trademark POWERPOINT could function as a source identifier and was registrable.
The Beijing High People's Court applied the principle set out by the Supreme People's Court in its Provisions on Several Issues Concerning the Hearing of Administrative Cases Involving the Granting and Affirmation of Trademark Rights (2010), which was recently updated in 2017.
The provisions stipulate that:
"In general, the Court shall base its finding of generic name on the situation at the time of the application date of the litigious trademark. Where the de facto status has changed at the time when the litigious trademark is approved for registration, the Court finding shall be based on the situation at the time of registration."
In this case, the Beijing High People's Court confirmed that 'PowerPoint' was not a generic name when the Class 9 application was filed and approved.
The Beijing High People's Court also found that the TRAB had provided no evidence that the situation had changed since the application date. Neither competitors in the same industry nor the relevant public ever used the word 'PowerPoint' as the product name for a general software format, which was confirmed by the existence of different trademark registrations owned by different parties for similar products.
